In re Aqua Products: In a Divided Decision, En Banc Federal Circuit Holds That Petitioner Must Prove All Propositions of Unpatentability, Including for Amended Claims

Fitzpatrick Case Update

On October 4, 2017, a divided en banc Federal Circuit issued several opinions addressing the burden of proof pertaining to a motion to amend claims in inter partes review (“IPR”) proceedings.  While none of the opinions garnered a full majority in all respects, the leading opinion authored by Judge O’Malley held that “in the absence of any required deference, the most reasonable reading of [35 U.S.C. § 316] is one that places the burden of persuasion with respect to the patentability of amended claims on the petitioner.”  In doing so, the Federal Circuit overruled its prior decisions addressing motions to amend in IPR proceedings, to the extent that those decisions conflict with this ruling.  Judge O’Malley was joined by Judges Newman, Lourie, Moore and Wallach, and Judges Dyk and Reyna concurred in the result.

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